Evaluating the restrictive nature of amending patent claims in India

Claims determine the extent, territory or scope of protection granted to an invention. The ability to seek claim amendments is a crucial aspect of any patent regime. The reasons for effecting claim amendments can be several, before or after grant of a patent.

Under the Indian Patent Act, Sections 57-59 govern the law for amendment. The permissible amendments include:

• Disclaimer, i.e. amendments which limit the scope of the invention;

• Correction, i.e. correction of an obvious mistake; and

• Explanation (for the purpose of clarification of the scope).

Permissible amendments are of such nature that the amended specification can only claim or describe matter which is already in substance disclosed or shown in the pre-amended specification, and claims of the amended specification should fall wholly within the scope of at least one claim of the specification, as they existed before the amendment was made. Thus, the scope of the amended claims is required to fall within the scope, not of the originally filed disclosure, but of the originally filed claims, at least one claim. In essence, the assessment of whether an amendment to the claims is overreaching permissible limits or not, is performed by comparing the scope of the amended claims with the scope of the originally filed or pre-amendment claims.

An amendment would, therefore, be allowed, only if the amended claim scope lies within the scope of at least one of the unamended claims.

Section 59 determines permissible amendments. Accordingly, it stands to reason that the actual flexibility afforded to applicants and patentees seeking to amend claims, would depend to a large extent on the flexibility with which the fetters placed by Section 59 can be interpreted.

Here, there is a reliance upon the application of classic rules of statutory interpretation to the text of Section 59, which finds that Section 59 is squarely couched in negative and prohibitive language leaving little if any scope for ambiguity insofar as the demands of the statute.

The Supreme Court of India, in a series of judgments, has held that a provision is couched in prohibitive or negative language, it can rarely be directory, and that the use of peremptory language in a negative form is per se indicative of the intent that the provision is to be mandatory (Crawford, the Construction of Statutes pp. 523-24). Owing to the mandatory nature of Section 59, the construction of claim scope assumes a very important role in any amendment exercise.

Since the majority of issues, particularly in relation to amendments, are ‘scope of the claims’, one needs to first determine what the said expression entails. The ‘scope’ of a patent has been defined in Black’s Law Dictionary as “the boundaries or limits of the invention protected by the patent, which are not matters of metes and bounds and can never be defined in the definite sense employed in thinking of physical things, but must be determined by methods based upon established principles of patent law. Smith vs Mid-Continent Inv Co, CCA Mo, 106 F.2d 622, 624.” The scope of a patent is doubtlessly equivalent to the scope of the claims of the patent which, as is well-settled under Indian law, define the territory or scope of the invention for which protection is claimed (Section 10(4)(c) of the Patents Act, 1970).

The mandatory fetters applicable to amendments lead to a variety of outcomes for different types of amendments and have different potential reactions of the Indian Patent Office (IPO):

This is usually allowed within the confines of Section 59 and it has the effect of a disclaimer and introduces a limitation/restriction of the scope of the invention.

This is usually permissible as introduction of a feature from the description and reduces the scope of the invention and can be considered as being a disclaimer. While amendment(s) to pending claim(s) based on contents of the specification do usually get allowed, the decision-making lacks uniformity and may vary from the controller to controller.

This is allowed, as it does not expand the claim scope at all. This is different from the deletion of any particular limitation from a claim, which might enlarge claim scope and may therefore not be allowed.

In general, voluntary addition of claims dependent or independent, requires a subjective and not an objective test to assess as to whether the original ‘scope of claims’ is enlarged or narrowed within the meaning of Section 59.

Addition of independent claims to cover different aspect of the invention should they fall within the broadest scope of the originally filed claims ideally is permissible as the ‘scope’ of the claim is not altered and the said addition can be considered as being by way of explanation. This, however, is not always how the assessment is made.

Dependent claims enable the applicant/patentee to define the invention and its scope broadly covered in an existing claim.

While the intended scope of claims can be understood with the help of preferred embodiments described in the specification, a dependent claim adds a further element to a claim or modifies and further defines an element that is already present in a claim, providing better and clearer coverage and ensuring a balance between specificity and span of claimed protection.

A dependent claim is by definition narrower in scope than the claim upon which it is dependent, since it adds at least one additional limitation to the scope of the latter. In line with Section 59, as long as a new claim does not seek to enlarge the scope of the claim and only restricts the scope of the claim which it is dependent upon, an objection against such an amendment ought not to be raised, assuming the other conditions enumerated in Section 59 are also satisfied. This is a disclaimer in a real sense.

Unfortunately, however, such amendments attract Section 59 objections from the IPO on a regular basis, which often leave the applicant either with severely limited options, if any, despite the invention disclosed therein being worthy of patent protection (or in the case of a granted patent, to settle for lesser clarity and specificity in claims, potentially making them harder to assert).

Some guidance from Indian courts and tribunals has been gathered from their various judgments interpreting Section 59.

In a recent judgment of the IPO, the controller objected to the addition of new claims highlighting that this was a voluntary amendment, whereby claims were amended by way of addition, and therefore would be barred Section 59 (1) of the Act. The Intellectual Property Appellate Board (IPAB) in appeal (OA/48/2020/PT/DEL) stated that to hold that “the function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed… A patentee who describes an invention in the body of a specification obtains no monopoly unless it is claimed in the claims.”

The IPAB, while agreeing that it was a settled principle of law on amendment of claims that no new claim may be allowed, with respect to two of the three claims in question, held that said claims could “not be construed as ‘new’ claim insertions, since they were just qualifying and limiting the scope of the already defined subject matter of the independent claim. No new feature(s), which was present in description but not claimed earlier, is being claimed through these claims.”

In AGC Flat Glass Europe vs Anand Mahajan, the Delhi High Court allowed post-grant claim amendments where a feature was included into the claims from the description sought on the grounds that they were clarificatory in nature and that they do not alter the scope of the claim which was not present in the original invention.

Insofar as the effect of a dependent (new or pre-existing claim) is concerned, the division bench of the Delhi High Court in F Hoffmann-La Roche Ltd & Anr vs CIPLA Ltd held as follows: “where claims are ‘dependent’ it incorporates by reference ‘everything in the parent claim, and adds some further statement, limitations or restrictions.’”

Further, on this very same issue, Clause 05.03.16 (q) at page 43 of the Manual of the Patent Office practice and procedure clearly states that “a dependent claim derives antecedence from an independent claim and reads into it the features of the independent claim and may contain additional non-essential features and even the minute aspects and optional features.”

Therefore, when claims are dependent claims, it incorporates by reference everything in the parent claim, and adds some further statement, limitations or restrictions. Therefore, there is no reason for new dependent claims being disallowed in such circumstances.

While the underlying understanding across jurisdictions is that an applicant should not be allowed to improve his position by adding a subject matter not disclosed in the application as filed, the approach followed by the patent office slightly varies from strict to liberal.

Article 123 of the European Patent Convention (EPC) relates to amendments. As with the Indian practice, a European patent application may not be amended in such a way that it contains a subject matter which extends beyond the content of the application as filed. Also, when making amendments it is essential to find support within specific paragraphs of the application, as filed.

The test in the EU is whether the amendment is clearly and unambiguously derivable from the application, as filed. Although using exact wording is not actually a requirement of European law, examiners are often seen to interpret the rule strictly, and by using exact wording, if possible, make prosecution easier.

While an objection to claim amendments may be raised by the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO), such an objection would be far more common before the EPO than the USPTO. This is because in the US patent examination system, the examiner bears the initial burden of making a case that the amendments cannot be derived from the original disclosure.

In the US, the written description requirement in 35 USC 112(a) prevents claim amendments that introduce ‘new matter’ into the disclosure of the invention. To satisfy this requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.”The proscription against the introduction of new matter in a patent application … serves to prevent an applicant from adding information that goes beyond the subject matter originally filed” (MPEP, 2163, I, B). There is no prohibition on adding new claims or limitations if the newly added claims or claim limitations are supported in the specification through express, implicit, or inherent disclosure.

As discussed above, it appears that both the EPO and the USPTO require claim amendments to be directly derivable from the original application. The EPO additionally also requires the claim amendments to be unambiguously derivable. Nonetheless, neither jurisdiction imposes the limitation No. 4 on the infringer, which curtails the ability of applicants to get their desired coverage and claim scope.

The additional requirement of the amended claim falling within the unamended claim scope is also onerous to international applicants and patentees which file applications in multiple jurisdictions and for who would, as far as possible, prefer to harmonise the amendments they are making to their applications throughout the world.

The present approach followed under Indian law towards claim amendments is not fully harmonised with the rest of the world. For starters, the decision-making surrounding allowing or rejecting proposed amendments to claims ought to be more subjective than objective.

The complete bar on the addition of claims, independent or dependent, can cause incomprehensible prejudice and harm to applicants. However, even if the added claims are clearly within the original disclosure and the original scope of claims, applicants continue to face objections. This decision of the IPO seems not to be based on ‘determination of scope of the claims’ but on the ‘existence of a claim in the original set’.

As per the Justice Ayyangar Committee Report on Patents of 1959 notes, the ultimate goal of the fetters placed on amendment of claims appears to be to ensure that the process of amendment of claims cannot be used by an applicant to gain a larger monopoly than it already claims. Therefore, an applicant should be allowed to bring claims which indeed cover their invention, are disclosed in the specification, and satisfy the patentability criteria even though they may not have been initially claimed. It is unjustifiable in this day and age for India to not embrace the harmonisation of patent laws, and tone down its requirements for an amendment to be allowed.

It is no secret that the IPO often interprets Section 59 in a highly restrictive manner, limiting the kind of amendments that an applicant can carry out. This leaves practitioners to wonder if the flurry of Section 59 objections is the result of strict interpretation, and that there is a need to now apply the real test, which is to determine scope of a claim.

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Archana Shanker

Head – patents and design, senior partner

Anand and Anand

T: +91 120 405 9300

E: archana@anandandanand.com

Archana Shanker is the senior partner and head of Anand and Anand’s patents and designs practice. She advises the Indian government on IP matters and has worked on the progressive development of patent jurisprudence of the country.

Archana has over 29 years of dedicated practice in prosecution, litigation and opposition across industries from pharmaceuticals to life sciences, software, ICT, telecom, mechanical, electronics and biodiversity. She is considered as a leading patent attorney for IP strategy, patents and designs prosecution and contentious. She has actively litigated in adversarial proceedings before the patent office, IPAB and courts, and notably has been a lead counsel in Monsanto’s Supreme Court judgment, and matters involving Novo Nordisk, Roche, Merck, and Sterlite among others.

Archana studied law at Delhi University and holds postgraduate diplomas in bioinformatics and pharmaceutical regulatory affairs. She is a registered patent agent and a member of Delhi High Court Bar Association and Delhi Bar Council.

Aastha Koolwal

Senior associate

Anand and Anand

T: +91 120 405 9300

E: aastha@anandandanand.com

Aastha Koolwal is a senior associate with the patents and designs team at Anand and Anand.

Prior to joining the firm, Aastha worked in-house and with IP firms on drafting and prosecution, technology transfer contract drafting, conducting patentability searches and assistance with patent litigation matters, among other tasks.

Aastha studied computer science at Maharishi Dayanand University, before securing a degree in IP law from the Rajiv Gandhi School of Intellectual Property Law, Indian Institute of Technology Kharagpur. She is a registered patent agent, and is also enrolled as a lawyer with the Bar Council of India.